BIZCHINA> Review & Analysis
|
BIZCHINA> Review & Analysis
|
|
New patent law amendment will strengthen IPR protections
(China Daily)
Updated: 2009-11-16 08:00 Biotechnology companies need to pay close attention to this disclosure requirement, because failure to comply could result in either the denial or invalidation of a Chinese patent. It should be noted that there is no equivalent requirement in the patent laws of Europe, Japan or the United States. On foreign filings As international companies establish research and development centers in China, they need to consider where first to file patent applications for inventions completed in China. Today, Article 20.1 of the patent law requires that a Chinese patent applicant for an invention completed in China must first file a patent application in China before any foreign filing. However, the current law is silent about what a foreign applicant is required to do in the same situation. Consequently, some foreign-owned research labs in China circumvent the first-to-file requirement of the current patent law by assigning patent applications for inventions completed in China to one of its foreign entities, and then having the patent applications filed outside of China first in the name of that foreign entity. The new amendment provides that patent applications for inventions completed in China can be filed directly outside of China (i.e., in the United States) without the need of first filing in China, as prescribed under the current law.
SIPO is drafting "implementing regulations" for the new patent law amendment, and it expects that the procedure for the State secret review would be set out in the regulations. However, it is expected, based on current discussions, that the submission for the review would not involve disclosure of the invention to the degree required for patent filing. Finally, although there is no statutory definition for inventions "completed in China", the understanding is that inventions jointly made in China by Chinese inventors and non-Chinese inventors are subject to this requirement. Joint ownership rights As multinational companies enter into research collaborations with Chinese universities and companies, they need to understand how Chinese law governs the commercialization of jointly developed and owned patent rights. In that regard, the new amendment to China's patent law includes provisions that govern unilateral exploitation of the patent rights without the consent of joint owners. Specifically, the amendment states in a new Article 15 that unless otherwise agreed upon, a joint owner can individually exploit or allow another to exploit the patent by means of a general license, but must share the royalties obtained thereof with other joint owners. The amendment does not stipulate how the royalties are to be distributed. Consent by all joint owners is required for other means of exploiting the jointly owned patent. Under such rules, multinational companies should draft collaborative research agreements in ways to ensure that commercial use of the patent rights arising from the joint research efforts will not be blocked by the default veto power of the joint owner(s).
The authors are lawyers for the US law firm Jones Day. The opinions expressed are their own. (For more biz stories, please visit Industries)
|
